Ex parte Agarwala

Board of Patent Appeals and Interferences

Feb 18, 2000

08480109 (B.P.A.I. Feb. 18, 2000)

An amendment after the final rejection was filed as paper1
no. 14 and its entry was approved [paper no. 15]. However,
said amendment made no changes to the claims on appeal.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BIRENDRA N. AGARWALA
__________
Appeal No. 1997-1248
Application 08/480,109
___________
ON BRIEF
___________
Before HAIRSTON, BARRETT and LALL, Administrative Patent
Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 9 to1
11.
The disclosed invention pertains to a solder pad
Appeal No. 1997-1248
Application 08/480,109
2
structure for adhering a semiconductor chip to a supporting
substrate. The invention comprises three specific types of
thin-film layers supported on a chip, namely, a bottom layer
of solder non-wettable material, an intermediate layer of a
mixture of solder wettable and non-wettable material, and a
top layer of solder wettable material. For best results, the
film edges are ideally shaped as a frustum cone and the solder
must have the shape of a ball and it must be electrically and
mechanically attached to said frustum cone structure encasing
the edges of the top and the intermediate layers. The
invention is further illustrated by the following claim.
Representative claim 9 is reproduced as follows:
9. A ball limiting metallurgy pad structure for
mechanically and electrically attaching a ball of solder to a
surface of a substrate, comprising:
a solder non-wettable layer adhering to said surface of
said susbstrate;
a solder wettable layer;
a phased layer comprised of a phased composition of said
solder non-wettable layer and said solder wettable layer
positioned between said solder non-wettable layer and said
solder wettable layer, said phased layer and said solder
wettable layer forming a frustum cone structure on said solder
non-wettable layer; and
Appeal No. 1997-1248
Application 08/480,109
A reply brief [paper no. 19] was filed and its entry2
approved without any further response from the Examiner [paper
no. 20].
3
a solder ball electrically and mechanically attached to
said frustum cone structure encasing edges of said wettable
layer and said phased layer with said solder ball forming a
solder bead away from said solder non-wettable layer.
The reference relied on by the Examiner is:
Satou 59-117135 Jul. 6, 1984
(Japanese Kokai Patent Publication)
Claims 9 to 11 stand rejected under 35 U.S.C. § 103 over
Satou.
Reference is made to Appellant’s briefs and the2
Examiner's answer for their respective positions.
OPINION
We have considered the record before us and we will
reverse the rejection of claims 9 to 11.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the Examiner is expected to make the factual
Appeal No. 1997-1248
Application 08/480,109
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determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467
(CCPA 1966), and to provide a reason why one having ordinary
skill in the pertinent art would have been led to modify the
prior art or to combine prior art references to arrive at the
claimed invention. Such reason must stem from some teaching,
suggestion or implication in the prior art as a whole or
knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986); ACS Hosp. System., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential
part of complying with the burden of presenting a prima facie
case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Furthermore, the Federal Circuit states that “[the] mere
fact that the prior art may be modified in the manner
Appeal No. 1997-1248
Application 08/480,109
5
suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification.” In re Fitch, 972 F.2d 1260, 1266 n.14, 23
USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re
Gordon, 773 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). “Obviousness may not be established using hindsight or
in view of the teachings or
suggestions of the inventor.” Para-Ordnance Mfg. V. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239 (Fed. Cir.
1995), citing W. Lish. Gore & Assocs., v. Garlock, Inc., 721
F.2d at 1553, 220 USPQ at 312-13 (Fed. Cir. 1983).
We take the independent claim 9 as representative claim.
The Examiner asserts [answer, page 3] that Satou shows “layers
7 and 8 substantially formed as a frustrum [sic] cone.” The
Examiner further contends [id.] that “[i]t would have been
obvious ... to melt the solder ball by heating to some degree
in order to form a contact, thereby the solder ball would bead
away from the non-wettable layer... .”
Appeal No. 1997-1248
Application 08/480,109
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Appellant argues [brief, pages 8 to 9 and Appendix B]
that there is no motivation or suggestion to heat the solder
ball in Satou, and, even if there were, to what degree would
one heat the ball. Appellant further argues [id.] that Satou
does not show the frustum cone structure recited in claim 9.
We find that the Examiner is using Appellant’s disclosure
as a blue print to come up with the structure recited in claim
9. We note that Satou is a highly relevant reference.
However, Satou falls short of the specific structure claimed
in claim 9. Thus, for example, whereas it may be true that
when and if the solder ball were sufficiently heated, the
solder ball would probably bead away from the non-wettable
bottom layer because the latter is non-wettable, the question
is what would motivate one to heat the ball. The Examiner
provides no reasoning for it. Furthermore, the Examiner’s
assertion that Satou shows a substantially frustum cone
structure for the edges of the layers is also unsupportable.
Satou does show a stepped arrangement of the various layers,
but it does not disclose a frustum cone structure. The
Examiner also argues [answer, pages 4] that “the appellant’s
Appeal No. 1997-1248
Application 08/480,109
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claims do not clearly specify that the solder ball is in
direct contact/touch with only the Cu layer or the phased
Cu/Cr layer, but simply as ‘a solder ball ... encasing edges
of said wettable layer and said phased layer with...’ as set
forth in claim 9.” Appellant counters [reply brief, pages 2
to 3] that “encasing” is reasonably synonymous with “direct
contact/touch”. We find that the phrase “encasing edges”
(claim 9, line 13) reasonably implies that the ball is in
direct contact with the edges forming the frustum cone.
Furthermore, we do not find such structure in Satou, and nor
do we find that it would have been obvious to come up with
this structure by merely using the disclosure of Satou.
Thus, we do not sustain the obviousness rejection of
claim 9 over Satou. Furthermore, since there is no additional
evidence or any other line of reasoning, the obviousness
rejection of dependent claims 10 and 11 over Satou is also not
sustained.
REVERSED
Appeal No. 1997-1248
Application 08/480,109
8
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
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